The IP International framework Seminar on the Role of IP for SMEs Damascus, November 17 and 18, 2008 Marco Marzano de Marinis, Program Officer Small and Medium-sized Enterprises Division World Intellectual Property Organization

./.. The IP International framework The Madrid Patent System Cooperation System(PCT)

Protecting technological innovation: Patents

The functioning of the IP System PATENT A patent is an exclusive right granted by the State for an invention that is new, involves an inventive step and is capable of industrial application. It is, generally, valid for 20 years. In return for the exclusive right allowed by the National IP Office, the applicant has to disclose the content of the invention to the public. INVENCIÓN An invention is a new or inventive solution to a technical problem Invention Display the patent content Patent Exploitation Patent grant - Balance between Patent owner right and the public interest - Economic and Technological Development

Protecting Inventions 1) Patent Protection Requirements: Novelty, Inventive step industrial application 2) Inventions that cannot be the object of a Patent : Discoveries and scientific theories; Aesthetic creations; Schemes, rules and methods for performing mental acts; Mere discoveries of substances as they naturally occur in the world; Inventions that may affect public order,good morals or public health; Diagnostic, therapeutic and surgical methods of treatment for humans or animals; Plants and animals other than microorganisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes; and Computer programs.

PROTECTION IS NOT GRANTED IN THE FOLLOWING CASES: Discoveries and scientific theories d) Schemes, rules and methods for performing mental acts Artistic or literature creations Diagnostic, therapeutic and surgical methods of treatment for humans or animals Industrial application and Technical aspects are missed

./.. Protecting Inventions 3) Practical aspects: Patent protection generally length for 20 years Territorial Protection Patent protection allows thirds to : reproduce distribute sell use the invention without having got the authorization by the owner Where to protect your invention National route Regional route (OEB, OAPI,etc..) International route (PCT)

Few Strategies for Protecting Your Invention on an International Scale National Route . Regional Route Internacional Route, PCT Patent National IP Office EPO Regional IP Office OAPI Nat. Office International Phase Nat. Office Nat. Office

Patent Protection Strategies Patent Cooperation Treaty File Local Application 12 months International application Once filed, the national application can be followed by one or few applications in foreign countries. The application has to be lodge within 12 month from the first deposal (priority clause, Paris Convention) - Many Administrative formalities depending on the number of countries in which you want to protect your invention - Increase of technical procedures, such as: state of art research - Payment of national patent registration costs (file and translation) within the 12 months allows by the Paris Convention

Few Strategies for Protecting Your Invention on an International Scale National Route . Regional Route Internacional Route, PCT Patent National IP Office EPO Regional IP Office OAPI Nat. Office International Phase Nat. Office Nat. Office

Average costs: European Patent system, protection within 8 countries for 10 years 100% 31 100 € 8.5 € Day Total 38% 11 800 € Translations 28% 8 900 € Renewal fees 20% 6 100 € Agents/Lawyers 14% 4 300 € IP Offices

Few Strategies for Protecting Your Invention on an International Scale National Route . Regional Route Internacional Route, PCT Patent National IP Office EPO Regional IP Office OAPI Nat. Office International Phase Nat. Office Nat. Office

Patent Cooperation Treaty CM Intro– 1 (Month 0) File PCT Application National Phase 12 30 Int . search report & written Opinion on the state of the art 16 18 International Publication Via I Via II File Local 20 Patent Cooperation Treaty 28 (optional) File demand for Int.. preliminary report on patentability 22 (optional) File demand for Int.. preliminary examination Patent Cooperation Treaty

PCT Members www.wipo.int/pct Patent Cooperation Treaty More than 130 Members countries, www.wipo.int/pct

PCT advantages Patent Cooperation Treaty 1 Unique administrative procedure: file lodges by the national or resident (physical or legal entity) of one PCT members, -- application extendable to 133 countries -- 1 set of fees 1 International search report + written opinion on the existing state of art 1 International publication 1 international preliminary examination + International preliminary examination report on patentability (optional) Extension up to 30 months (instead of 12 months as foreseen by the Paris convention) for protecting the patent internationally The filing of national: fees and patent application, are foreseen from month 30 and only if the owner considers appropriate proceeding in the international registration * in the PCT procedure WIPO does not allows any patent. It simply facilitate invention protection world wide through national IP Offices

TM international protection of TM: The Madrid System

Few Strategies for Protecting Your TM on an International Scale National Route . Regional Route Internacional Route, Madrid system TM National IP Office Regional Office Regional IP Office Nat. Office International Phase

Madrid System 1 system two treaties : -- Madrid Agreement (1891) -- Madrid Protocol (1989) The main advantage of the Madrid system is of granting the registration of TMs in about 80 member countries By using 1 unique procedure 1 unique administrative file management 1 language (EN, FR, ES) More than 135.000 users; 412,000 international registration in force = 4,800,000 National TMs Extremely useful for SMEs since costs are reduced of 10/20 times

./.. The Madrid System (data 2008: about 80 members)) Madrid System Arrangement 11 Protocole 21 Arrangement and Protocole 45 Madrid System

./.. Madrid System Madrid Agreement (1891) Madrid Protocol (1989) 77 51 27

The Madrid system and its functioning Main Aspects 1 application, 1 language (FR, EN, ES), 1 set of fees, Lodged by a natural or legal entity, having an: business establishment domicile nationality 1 unique system of management: National Office, Formal examination, registration, notification and publication, Possible refusal by contracting parties

./.. Madrid system costs simulation Madrid System data 2003

Madrid System’s Main users Madrid System data 2003 France 3 281=15.0% Germany 4 999=22.9% Other Countries in transition 1484=6.8% Other Developing Countries 197=0.9% Czech Republic 355=1.6% Italy 1 806=8.3% United Kingdom 599=2.7% Benelux 2 104=9.6% Denmark 347=1.6% Other Countries 1303=6.0% Sweden 355=1.6% Austria 723=3.3% Switzerland 2 204=10.1% Spain 914=4.2% Turkey 408=1.9% China 413=1.9% Russian Federation 355=1.6%

Registration by owners’ categories TM grouped by owners 1-2 marks 3-10 marks 11-100 marks 101-500 marks > 500 marks Total 80.00% 16.33% 3.47% 0.19% 0.01% 100.00% 104900 21408 4555 245 18 131126 N. Of Owners Owners  1-2 marks 32% 11-100 marks 27% 3-10 marks 25% 101-500 marks 11% > 500 marks 5% Registrations more than (400,000) 

OMPI, PMEs website: www.wipo.int/sme Thanks! OMPI, PMEs website: www.wipo.int/sme marco.marzano@wipo.int